Nicole Smith is a partner in the firm’s Intellectual Property Group. When faced with high-stakes intellectual property disputes, clients rely on Ms. Smith for her expertise and winning track record. Clients appreciate Ms. Smith’s ability to master their technologies and products quickly, as well as her particular talent in explaining those technologies in clear and compelling oral arguments to judges and juries. While her trial practice focuses on patent litigation, she also has experience litigating trademark, copyright, trade secret, and related intellectual property matters.
Ms. Smith’s clients come from a broad range of industries, including semiconductors, software, media and entertainment (video editing and DVD/Blu-ray technologies), video games, consumer electronics, and medical devices. Her court victories have included representation of large corporations, as well as single inventors.
In a 2005 trial against Microsoft, Amado v. Microsoft Corporation (C.D. Cal.), Ms. Smith spearheaded the damages portion of the case on behalf of Armando Amado, an inventor from Guatemala who alleged that the software giant had infringed his patents on spreadsheet software he designed. Following a jury verdict of infringement, Mr. Amado was awarded $6.9 million, which was affirmed on appeal. After a second appeal relating to post-verdict sales, Mr. Amado’s total award increased to $16 million. Ms. Smith also was a key member of the trial team representing Anaheim-based Odetics, Inc. in a patent infringement suit against StorageTek Corporation. The trial team won a $70 million verdict, and after prevailing on appeal, settled the case in 1999 for $100 million.
(District of Delaware). Currently representing nine media and entertainment companies in patent infringement suits involving video compression.
MONKEYMedia v. Buena Vista Home Entertainment, Inc
(Western District of Texas). Currently representing numerous entertainment companies in patent infringement case involving DVD and Blu-ray technology. Filed reexamination requests as to three of six patents; all claims stand rejected. The court granted defendants’ motion to stay pending reexamination.
Patent Harbor v. Fox et al.
(Eastern District of Texas). Represented seven media and entertainment companies in patent infringement suit involving DVD and Blu-ray authoring technologies, and obtained favorable settlements.
Multimedia Patent Trust v. Disney et al.
(Southern District of California). Represented several large media and entertainment companies in patent infringement suit involving video compression, and obtained favorable settlements.
Thomson Licensing (Technicolor)
(Central District of California and International Trade Commission Inv. No. 337-TA-617). Represented third party Thomson Licensing as lead attorney through trial in ITC action brought by Funai Electric Corp. against numerous digital television makers to enforce patents purchased from Thomson. After a two-week trial, the judge issued a ruling in favor of an exclusion order, which the Commission affirmed.
eTool Development v. National Semiconductor
(Eastern District of Texas). Represented National Semiconductor (purchased by Texas Instruments during the case) in a patent infringement suit involving web-based product design software. Prevailed on summary judgment of non-infringement on December 27, 2011, on the eve of trial, and the case settled shortly thereafter.
Cheetah-Omni v. Mitsubishi Digital Electronics America, Inc.
(Eastern District of Texas). Represented Mitsubishi Digital Electronics Inc. in a patent infringement case involving DLP® televisions. Judgment was entered in Mitsubishi’s favor following a favorable claim construction, and plaintiffs subsequently filed an appeal in the Federal Circuit. The matter was heard on October 8, 2010, and one court day later, on October 12, 2010, judgment in Mitsubishi’s favor was affirmed.
ICHL v. Mitsubishi Digital Electronics America, Inc.
(Eastern District of Texas). Represented Mitsubishi in a patent infringement case involving heat sink assemblies in televisions. Judgment was entered in Mitsubishi’s favor following a favorable claim construction, and plaintiff withdrew its appeal in January 2012.
Genoa Color Technologies v. Mitsubishi Electric Corp., et al.
(Southern District of New York). Represented several Mitsubishi entities in a patent infringement action involving color display technology in rear-projection DLP® televisions and projectors. The court granted Mitsubishi’s motion to stay pending reexamination of Genoa’s patent at the PTO, and the case settled thereafter on very favorable terms for Mitsubishi.
Printless Previews v. Twentieth Century Fox et al.
(Central District of California). Currently representing movie studios (Fox, Sony/Columbia, Paramount/DreamWorks, Warner Bros./New Line, Disney/Miramax, MGM/United Artists, Universal City Studios) in patent infringement action relating to post-production and editing methods, including high -definition previews of movies. The case is now stayed after the PTO granted the movie studios’ request for reexamination of Printless Previews’ patent.
Guardian v. Mitsubishi Digital Electronics America, Inc.
(Southern District of California). Represented Mitsubishi in a patent infringement action involving V-chip technology. After successful reexamination requests resulted in the invalidation of most of the claims of the patents in suit, obtained a very favorable settlement for Mitsubishi.
Amado v. Microsoft Corporation
(Central District of California). Represented individual software inventor in patent infringement trial against Microsoft Corp., resulting in a jury verdict for the inventor and an award of $6.9 million, which was affirmed by the Federal Circuit on appeal. After a second appeal relating to post-verdict sales, Mr. Amado’s total award increased to $16 million.
Mahurkar v. C.R. Bard
(Northern District of Illinois). Represented defendant from 2002 through 2006 in patent litigation suit concerning hemodialysis catheters; the case settled favorably for our client on the eve of trial.
Odetics, Inc. v Storage Technology Corp.
(Eastern District of Virginia). Represented plaintiff Odetics in patent infringement trial, resulting in a jury verdict of willful infringement and an award of $70.6 million. The case ultimately settled for $100 million.